A provisional refusal of protection is issued by the United States Patent and Trademark Office (USPTO) when a trademark for which an extension of protection is sought doesn’t meet the eligibility requirements for registration on the Principal Register. A provisional refusal is also sometimes referred to as a “nonfinal office action” and is essentially identical to a trademark office action that would be issued by the USPTO in response to a trademark application not filed in accordance with the Madrid Protocol. In other words, “provisional refusal” is just a fancy name given to an office action when a mark is the subject of an extension of protection under Section 66(a) rather than the subject of a trademark application filed directly with the USPTO under Section 1(a), Section 1(b), Section 44(d), or Section 44(e).
How Long Do I Have to Respond to a Provisional Refusal?
The holder of the international registration on which the extension of protection is based must respond to a provisional refusal within six months of the date on which notification of the refusal was sent to WIPO. That date is located on the WIPO cover letter and can be confirmed through TSDR by locating the “Create/Mail Date” of the “IB-1rst Refusal Note.” If the holder fails to file a response to the provisional refusal by the deadline, the application for the extension of protection will go abandoned. If that occurs, the holder of the international registration would need to file a brand new request for an extension of protection unless the holder is eligible to file a Petition to Revive.
How Do I File a Response to a Provisional Refusal?
A response to a provisional refusal must be electronically filed through TEAS using the “Response to Examining Attorney Office Action Form.” It is extremely important to fully address each and every issue raised in the provisional refusal. If the holder fails to do so, the USPTO will issue a final office action. The holder would then have six months in which to file a Request for Reconsideration and/or a trademark appeal. Once the holder has satisfied all outstanding requirements, the application for an extension of protection will be published for opposition.
Who is Permitted to File a Response?
If the holder of the international registration is domiciled outside of the United States or its territories (which is typically the case), the holder must hire a U.S.-licensed attorney to file a response to the provisional refusal. Any response filed that is not in accordance with this rule will be disregarded by the USPTO and the holder risks its extension of protection being deemed abandoned.
What is the Cost of Filing a Response?
Generally speaking, the USPTO does not charge a fee for filing a response to a provisional refusal. Of course, if the holder of the international registration is required to hire a U.S.-licensed attorney because it is domiciled outside of the USA, or if the holder simply prefers to work with an attorney to ensure that the response is properly prepared and timely filed, the attorney will understandably charge a fee for all legal services rendered. That fee will primarily depend on the complexity of the issues raised in the provisional refusal and the amount of time it will take to prepare/file the response.
I Can Help With Responding to a Provisional Refusal
I’m experienced US trademark attorney Morris Turek. If you’ve received a provisional refusal from the USPTO and are seeking a trustworthy and knowledgeable trademark attorney to assist you with preparing and filing a response, please contact me right away for a free review and consultation. I can be reached by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or by filling out the contact form located towards the bottom of this page (don’t forget to include either your international registration number or the serial number of your trademark application). I look forward to hearing from you soon.